Semiconductor Chip Protection Act of 1984

The Semiconductor Chip Protection Act of 1984 (or SCPA) is an act of the US Congress that makes the layouts of integrated circuits legally protected upon registration, and hence illegal to copy without permission.

Background

Prior to 1984, it was not necessarily illegal to produce a competing chip with an identical layout. As the legislative history for the SCPA explained, patent and copyright protection for chip layouts, or chip topographies, was largely unavailable.^[1] This led to considerable complaint by U.S. chip manufacturers—notably, Intel, which, along with the Semiconductor Industry Association (SIA), took the lead in seeking remedial legislation—against what they termed "chip piracy." During the hearings that led to enactment of the SCPA, chip industry representatives asserted that a pirate could for $10,000 copy a chip design that had cost its original manufacturer upwards from $100,000 to design.

Enactment of U.S. and other national legislation

In 1984 the United States enacted the Semiconductor Chip Protection Act of 1984 (the SCPA) to protect the topography of semiconductor chips. The SCPA is found in title 17, U.S. Code, sections 901-914 (17 U.S.C. §§ 901-914).

Japan^[2] and European Community (EC) countries soon followed suit^[3] and enacted their own, similar laws protecting the topography of semiconductor chips.^[4]

Chip topographies are also protected by TRIPS, an international treaty.^[5]

How the SCPA operates

A sui generis law

Although the U.S. SCPA is codified in title 17 (copyrights), the SCPA is not a copyright or patent law. Rather, it is a sui generis law resembling a utility model law or Gebrauchsmuster. It has some aspects of copyright law, some aspects of patent law, and in some ways it is completely different from either. From Brooktree, ¶ 23:

The Semiconductor Chip Protection Act of 1984 was an innovative solution to this new problem of technology-based industry. While some copyright principles underlie the law, as do some attributes of patent law, the Act was uniquely adapted to semiconductor mask works, in order to achieve appropriate protection for original designs while meeting the competitive needs of the industry and serving the public interest."

In general, the chip topography laws of other nations are also sui generis laws. Nevertheless, copyright and patent case law illuminate many aspects of the SCPA and its interpretation.

Acquisition of protection by registration

Chip protection is acquired under the SCPA by filing with the U.S. Copyright Office an application for "mask work" registration under the SCPA, together with a filing fee. The application must be accompanied by identifying material, such as pictorial representations of the IC layers—so that, in the event of infringement litigation, it can be determined what the registration covers. Protection continues for ten years from the date of registration.

Mask works

The SCPA repeatedly refers to "mask works." This term is a relic of the original form of the bill that became the SCPA and was passed in the Senate as an amendment to the Copyright Act. The term mask work is parallel to and consistent with the terminology of the 1976 Copyright Act, which introduced the concept of "literary works," "pictorial works," "audiovisual works," and the like—and which protected physical embodiments of such works, such as books, paintings, video game cassettes, and the like against unauthorized copying and distribution. This terminology became unnecessary when the House of Representatives insisted on the substitution of a sui generis bill, but the SCPA as enacted nonetheless continued its use. The term "mask work" is not limited to actual masks used in chip manufacture, but is defined broadly in the SCPA to include the topographic creation embodied in the masks and chips. Moreover, the SCPA protects any physical embodiment of a mask work.^[6]

Enforcement

The owner of mask work rights may pursue an alleged infringer ("chip pirate") by bringing an action for mask work infringement in federal district court. The remedies available correspond generally to those of copyright law and patent law.

Functionality unprotected

The SCPA does not protect functional aspects of chip designs. That is reserved to patent law. Although EPROM and other memory chips topographies are protectable under the SCPA, such protection does not extend to the information stored in chips, such as computer programs. Such information is protected, if at all, only by copyright law.

Reverse engineering not prohibited

The SCPA permits competitive emulation of a chip by means of reverse engineering. The ordinary test for illegal copying (mask work infringement) is the "substantial similarity" test of copyright law,^[7] but when the defense of reverse engineering is involved and supported by probative evidence (usually, the so-called paper trail of design and development work), the similarity must be greater.^[8] Then, the accused chip topography must be substantially identical (truly copied by rote, so-called slavish copying), rather than just substantially similar, for the defendant to be liable for infringement.^[9] Most world chip topography protection laws provide for a reverse engineering privilege.

References

^ The Senate Report on the bill (S.Rep. No. 425, 98th Cong., 2d Sess. (1984)) stated:

In the semiconductor industry, innovation is indispensable; research breakthroughs are essential to the life and health of the industry. But research and innovation in the design of semiconductor chips are threatened by the inadequacies of existing legal protection against piracy and unauthorized copying. This problem, which is so critical to this essential sector of the American economy, is addressed by the Semiconductor Chip Protection Act of 1984. ...[The bill] would prohibit "chip piracy"--the unauthorized copying and distribution of semiconductor chip products copied from the original creators of such works.

Quoted in Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, ¶ 17 (Fed. Cir. 1992). See also Brooktree, ¶¶ 21-22 (copyright and patent law ineffective).
^ Japan was the first country to enact its own version of the SCPA, the Japanese "Act Concerning the Circuit Layout of a Semiconductor Integrated Circuit" of 1985.
^ In 1986 the EC promulgated a directive requiring its members to adopt national legislation for the protection of semiconductor topographies. Council Directive 1987/54/EEC of 16 Dec. 1986 on the Legal Protection of Topographies of Semiconductor Products, art. 1(1)(b), 1987 O.J. (L 24) 36.
^ The UK enacted the Copyright, Designs and Patents Act, 1988, c. 48, § 213, after initially taking the position that its copyright law fully protected chip topographies. See British Leyland Motor Corp. v. Armstrong Patents Co. Criticisms of inadequacy of the UK copyright approach as perceived by the U.S. chip industry are summarized in Further chip rights developments, Micro Law, IEEE Micro, Aug. 1985, pp. 91-92. Australia passed the Circuit Layouts Act of 1989 as a sui generis form of chip protection. In 19_ Korea passed the Act Concerning the Layout-Design of Semiconductor Integrated Circuits.
^ On Jan. 1, 1995, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) (Annex 1C to the World Trade Organization (WTO) Agreement), went into force. Part II, section 6 of TRIPs protects semiconductor chip products and was the basis for Presidential Proclamation No. 6780, March 23, 1995, under SCPA § 902(a)(2), extending protection to all present and future WTO members.
^ The SCPA, [(17 U.S.C. § 901(a)(2))], defines a mask work as "a series of related images, however fixed or encoded, having or representing the predetermined, three-dimensional pattern of metallic, insulating, or semiconductor material present or removed from the layers of a semiconductor chip product, and in which the relation of the images to one another is such that each image has the pattern of the surface of one form of the semiconductor chip product."
^ Brooktree, ¶¶ 31-33.
^ Brooktree, ¶¶ 48-66.
^ See Explanatory Memorandum, Mathias-Leahy Amendments to S. 1201, 130 Cong. Rec. S12, 91617 (daily ed. Oct. 3, 1984). See also Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1566-67 (Fed. Cir. 1992); Leo J. Raskind, Reverse Engineering, Unfair Competition, and Fair Use, 70 Minn. L. Rev. 385, 406 (1985).